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domain name considerations

FAQs About .Sucks Domain Names and How to Protect Your Trademark

By John DiGiacomo

Domain names with the .sucks extension became available in 2014 when the Internet Corporation for Assigned Names and Numbers (“ICANN”) approved the generic top-level domain extension. See here and see Forbes media report here. For obvious reasons, businesses are unhappy when their trademark is registered and used with the .sucks extension. Here are a few FAQs about the extension and some tips on what to do if your trademark has been registered as a domain with a .sucks extension.

Can I have the domain name shut down or transferred to my business?

There is a procedure through the World Intellectual Property Office (“WIPO”) where trademark owners can challenge domain name registrations that use their trademark or a name that is confusingly similar. The procedure is through use of ICANN’s Uniform Domain Name Dispute Resolution Policy which are commonly called UDRP proceedings. In general, a complaint is filed with ICANN seeking either to cancel the domain name or have the domain name transferred to the trademark owner. Trademark owners can also file court proceedings under the US trademark laws and federal courts have the power to close a domain or transfer ownership to the trademark owner.

What are the standards?

For a UDRP proceeding, a trademark owner must prove that they own a trademark. Then, to succeed in the UDRP proceeding, the trademark owner must show three legal elements:

  • The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant — the trademark owner — has rights
  • The Respondent has no rights or legitimate interests in respect of the disputed domain name and
  • The Respondent has registered and is using the disputed domain name in bad faith

How does this standard apply with .sucks domain names?

Generally, the standard is applied in the usual manner when there is a dispute about a .sucks domain name. Typically, the trademark owner has no difficulty proving the first legal element. But the second and third elements can be legally difficult depending on the facts of the case. Why? Because there is a tension between trademark rights and the First Amendment rights to free speech. Many .sucks domain names are registered for the purpose of criticizing the business practices of the trademark owner. When this is shown, then a Respondent can argue that it has a “legitimate interest” in registering and owning the domain name and in operating a website. Further, it becomes difficult for a trademark owner to argue that the domain name is/was registered in bad faith and/or that the website is being used in bad faith.

That being said, many .sucks domain names are used for legitimate purposes like trademark ransom and driving traffic to a website by use of a trademark to generate ad revenue or direct traffic to a different commercial website. Under those circumstances, a trademark owner will generally be successful in shutting down or canning ownership of the domain name. See, for example, the recent WIPO arbitration proceeding Sanofi v. Privacy Hero Inc. / Honey Salt Ltd., Case No. D2020-2836 (WIPO February 11, 2021). In that case, Honey Salt, Inc. registered the domain name Sanofi is a trademark owned and registered by a French pharmaceutical company headquartered in Paris. Honey Salt claimed that it registered as a forum for public discussion and criticism of Sanofi. However, the facts also showed that most of the comments and complaints on the website were undated and anonymous. Further, the website contained many links that directed users to other commercial websites. Finally, the domain name was for sale.

Because of these facts, the WIPO arbitration panel held that Honey Salt’s real purpose for using the Sanofi trademark was to drive traffic to their .sucks website which, according to the panel, was intended to divert traffic to other websites and increase the purpose price for the website. For these reasons, the panel concluded that the website was not operated for legitimate purposes and that the domain name was registered in bad faith. The panel ordered ownership of the domain name transferred to Sanofi.

What can I do to protect my trademark?

The easiest method of protecting your trademark is to register your trademark with the .sucks extension. If someone else has already registered the domain name, then it may be necessary to begin UDRP or federal court proceedings.

If you have questions about protecting your trademarks, copyrights and other intellectual property, contact the IP litigation lawyers at Revision Legal at 231-714-0100.

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